Brokaw v. Vogel, Patent Appeal No. 8275.

• Decision Date: 06 August 1970
• Docket Number: Patent Appeal No. 8275.
• Citation: 166 USPQ 428,429 F.2d 476
• Parties: Adrian P. BROKAW, Appellant, v. Charles B. VOGEL, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

166 USPQ 428, 429 F.2d 476 (1970)

Adrian P. BROKAW, Appellant, v. Charles B. VOGEL, Appellee.

Patent Appeal No. 8275.

United States Court of Customs and Patent Appeals.

August 6, 1970.

Frank S. Troidl, Houston, Tex., attorney of record, for appellant; Douglas M. Clarkson, Robert W. Mayer, William E. Johnson, Jr., Dallas, Tex., of counsel.

Theodore E. Bieber for appellee.

Before RICH, ALMOND, BALDWIN and LANE, Judges, and FORD, Judge, United States Customs Court, sitting by designation.

RICH, Judge.

This appeal is from the decision of the Board of Patent Interferences¹ in interference No. 94,142 involving Brokaw patent No. 3,019,413, for "Discriminating Interval Time Computer for Acoustic Well Logging Systems," issued January 30, 1962, on application serial No. 806,586, filed April 15, 1959, and Vogel application serial No. 253,682, filed January 24, 1963, entitled "Well Logging."² The appeal is directed only to count 1, which was awarded to Vogel, no appeal having been taken as to a second count which was awarded to Brokaw. We reverse.

The subject matter is an electronic computer system for use in an acoustical type system for logging bore holes in drilling for oil. The nature of the system appears from the count, which reads:

1. A computer in an acoustic well logging system for discriminating between valid signal information represented as time intervals between a pair of accepted pulses and invalid signal information represented as time intervals between a pair of rejected pulses, comprising means to accept a pair of pulses as valid signal pulses when the pulses occur within a predetermined time range following a synchronizing pulse, means generating a function pulse in response to said pair of pulses, means for storing the valid signal information in response to the function pulse, and utilization means for measuring the stored valid signal information.

Brokaw took no testimony and relied on his filing date. The board found that Vogel had proved by his evidence an actual reduction to practice of a logging system using the subject matter of the count by November 27, 1957, well prior to Brokaw's filing date of April 15, 1959. Brokaw does not challenge that finding.

The sole issue arises from the board's ruling against Brokaw's charge that Vogel forfeited his right to a patent on count 1, as against Brokaw, because of delay in filing his application after actual reduction to practice and the attendant circumstances under the doctrine enunciated in Mason v. Hepburn, 13 App.D.C. 86 (D.C.Cir., 1898), and applied by this court in Woofter v. Carlson, 367 F.2d 436, 54 CCPA 917 (1966), and Engelhardt v. Judd, 369 F.2d 408, 54 CCPA 865 (1966). The Mason v. Hepburn doctrine now finds statutory basis in 35 U.S.C. § 102(g), which specifies, as one ground for denying a patent, that

(g) before the applicant\'s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it.

Here Vogel is a de facto first inventor, having concededly made an actual reduction to practice before the filing date on which Brokaw relies. He is "another" who made the invention in this country before Brokaw did on which basis he can defeat Brokaw's right to a patent but only if, under section 102(g), he did not abandon, suppress, or conceal his invention. On the facts of this case, we are not concerned with abandonment. The true issue is whether Vogel suppressed or concealed his prior invention so as to have forfeited his right to a patent as against the later inventor Brokaw. Under Mason v. Hepburn, the question is whether Brokaw is to be considered the "first" inventor in law, though, de facto, he is a second inventor.

Specifically, Brokaw contends that:

* * * (1) the evidence so clearly establishes that Vogel abandoned, suppressed or concealed his invention within the meaning of 35 U.S.C. § 102 (g) that any additional proof that Vogel was "spurred" into action by the issuance of the Brokaw patent is superfluous and (2) if such additional positive proof of "spurring" is required by the law, the record clearly shows more than ample evidence from which it can be inferred that Vogel was "spurred" into action by actual knowledge of the Brokaw patent.

In support of his position, Brokaw points out that Vogel did not file his application³ until more than five years (1957 to 1963) after his actual reduction to practice and only six days before the expiration of the one-year period set by 35 U.S.C. § 135 for an applicant to make a claim to the same subject matter as a claim of an issued patent. He also emphasizes that the testimony shows that the equipment through which Vogel's actual reduction to practice was effected was dismantled.

Review of the aforementioned decisions, which Brokaw in oral argument characterized as on "all fours" with the present case, reveals significantly parallel bases for a holding of concealment or suppression here. Thus, in Mason v. Hepburn, Mason waited seven years to file his application after a unit embodying his invention, a clip to secure the magazine and barrel of a gun together, had been attached to a gun ready for sale and that gun had been stored with the clip attached to it. He had also, in the meantime, procured a patent for a gun and for a different clip to secure the magazine and barrel together. In concluding that Mason had forfeited his rights to a patent for the invention as against Hepburn, the court commented:

Apparently the invention as a thing of value had passed out of his mind, to which it was recalled by seeing the publication of the patent to Hepburn in the OFFICIAL GAZETTE.

In Woofter v. Carlson, Carlson filed an application on his invention, an electrical connector, some eight years after his reduction to practice. The evidence showed that AMP, Carlson's assignee, was spurred into filing by knowledge that GM, Woofter's assignee, was placing the connector in commercial use. The court there found that Woofter met the burden of proving his case because he had "established in the present record facts which establish a concealment or suppression of the AMP invention within the so-called `forfeiture rule' of Mason v. Hepburn * * *."

In Engelhardt v. Judd, Englehardt, who was likewise held to have forfeited his right to a patent despite an actual reduction to practice two years prior to Judd's earliest date, conceded that he had "no plans" for further activities in connection with the subject matter, a chemical compound, at the time when he became aware of Judd's patent. In other words, the evidence justified the conclusion that knowledge of the Judd patent was the direct cause of Engelhardt's filing his application.

On the other hand is Gallagher v. Smith, 206 F.2d 939, 41 CCPA 734 (1953), relied on by Vogel and the board, but it can be distinguished on its facts from the...